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San Diego Copyrights: Careful How You Register Photos

When a San Diego business registers photographs for copyright, there is a choice between registering them as individual photos or as a compilation. The most common issues are cost, as fees are charged per registration, and practicality, as one registration form is needed for a compilation, but many forms are needed for a whole bunch of photos. At the beginning of the process, this may seem like an easy choice: register the photos as a compilation. However, a recent case decided by the federal Ninth Circuit in San Francisco points out that the amount of damages that can be obtained may turn on how the photos were registered. An experienced San Diego corporate attorney with experience in copyright law and registration can provide essential advice and counsel. See VHT, Inc. v. Zillow Group, Inc., Case No. 17-35587 and 35588 (US 9th Cir. March 15, 2019).

VHT involved photos posted on Zillow.com. As many know, Zillow is a popular website for real estate that is searchable for buyers looking for homes or land or other types of property. Many realtors use Zillow and upload photos of the houses that they have listed. These photos are protected by copyright at common law, but many individual realtors do not bother to actually register the photos under the Copyright Act. Registration is necessary before a lawsuit can be brought to seek damages for infringement. The plaintiff in the above-linked case was a professional photography company, VHT, Inc., which took photos of houses (both interior and exterior) that were eventually uploaded to Zillow. VHT registered its photographs for copyright protection and eventually sued Zillow for infringement.

Zillow won most of the case because VHT had given permission to the realtors to upload the photos for use while a listing was pending. Zillow received an assignment of that permission. In general, Zillow removed photos — indeed whole listings — once the property was sold. So, the vast majority of the photos uploaded were deemed non-infringing. A good win for Zillow.

However, there was a much smaller category of photos — about 3,900 — that Zillow retained and continued to display on its website. These were in a section of the website called “Digs” which featured photos of artfully-designed rooms in some of those properties. The Digs section of Zillow is geared toward home improvement and remodeling. The photos are coded or “tagged” on the website by various criteria, like room type, style, cost, and color. Users can search the “Digs” database of photos by these various criteria.

Zillow did not have permission from the realtors or from photographers like VHT to keep these photos uploaded and displayed. The 9th Circuit court held that such continued use and display was infringement. This was an affirmation of what the trial court and the jury had determined.

However, the 9th Circuit sent the case back to the trial court to redetermine the various damages that were awarded. In sending the case back to the trial court, the 9th Circuit engaged in a long discussion about the method that VHT had used to register its copyright and what statutory damages would be available. VHT had registered the 3,900+ photos in 10 different registrations, all as “compilations.” Under the Copyright Act 17 U.S.C. § 504(c)(1), a plaintiff like VHT can elect to take an award of statutory damages that ranges from a low of $750 to a high of $30,000. However, the courts have determined that statutory damages are tied to the statutory definition of “work.” Copyright law protects “original works of authorship.” 17 U.S.C. § 102(a). For purposes of obtaining statutory damages, the Copyright Act states that “all the parts of a compilation . . . constitute one work.” 17 U.S.C. § 504(c)(1).

Thus, on remand, the trial court will have to determine how many copyrighted “works” were possessed by VHT: 10 (one for each compilation that was registered) or 3,900+ (one copyright for each photo). Depending on how the trial court rules, the amount of statutory damages will either be 10 or 3,900+ times the amount awarded by the jury from the allowable range. As can be seen, the question of whether to register copyrights as a compilation or individually has another practical concern: how much can be collected as statutory damages if there is infringement.

Contact San Diego Corporate Law Today

If you need legal advice and services related to registering copyrights, trademarks, or your company’s other intellectual property, call attorney Michael Leonard, Esq., of San Diego Corporate Law. Mr. Leonard was named “best of the bar” four years running by the San Diego Business Journal. To schedule a consultation, contact us via email or call at (858) 483-9200. Like us on Facebook.